IP Verse

R.R. Donnelley & Sons Company vs ScriptChek Visual Verification Systems, Inc.

The detailed information for PTAB case with proceeding number IPR2021-00564 filed by R.R. Donnelley & Sons Company against ScriptChek Visual Verification Systems, Inc. on Feb 26, 2021. This includes filing dates, application numbers, tech centers, patent numbers, and current case status.

Case Details

Proceeding Number
IPR2021-00564
Filing Date
Feb 26, 2021
Petitioner
R.R. Donnelley & Sons Company
Respondent
ScriptChek Visual Verification Systems, Inc.
Status
Final Written Decision
Respondent Application Number
11050337
Respondent Tech Center
3700
Respondent Patent Number
7398999
Institution Decision Date
Sep 7, 2021
Termination Date
Sep 6, 2022

Proceeding Documents

The table below shows documents filed in the case, listing each document name, filing date, document type, and filing party. Tracking these filings indicates the activity of the parties involved in the case, and the types of documents filed can provide insights into the legal strategies being employed.


Document NameFiling DateCategoryFiling Party

Alert me when new update on this case

Final Written Decision: Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318a PUBLIC VERSION (originally entered Sept. 6, 2022)

Oct 25, 2023PAPERBOARD

DECISION Denying Patent Owner’s Corrected Request for Rehearing of Final Written Decision 37 C.F.R. § 42.71(d) Granting Motions to Seal 37 C.F.R. §§ 42.5, 42.14 PUBLIC VERSION (originally entered May 5, 2023)

Oct 25, 2023PAPERBOARD

Order: Granting-In-Part Petitioner’s Motion to Expunge

Jun 16, 2023PAPERBOARD

Amended Motion to Expunge Confidential Information

Jun 13, 2023PAPERPETITIONER

Petitioner's and Patent Owner's Joint Proposed Redactions to Decision Denying Corrected Request for Rehearing of Final Written Decision

May 12, 2023PAPERPETITIONER

Rehearing:Decision on Request for Rehearing

May 5, 2023PAPERBOARD

EXPUNGED

May 4, 2023PAPERBOARD

Petitioner's Opposition to Patent Owner's Corrected Request for Rehearing

Feb 17, 2023PAPERPETITIONER

Corrected Request for Rehearing [sealed]

Feb 17, 2023PAPERPATENT OWNER

Corrected Request for Rehearing [public]

Feb 17, 2023PAPERPATENT OWNER

Motion to Seal re Corrected Request for Rehearing

Feb 17, 2023PAPERPATENT OWNER

ORDER Conduct of the Proceeding Expunging Improperly Filed Papers 37 C.F.R. 42.5, 42.7(a)

Feb 9, 2023PAPERBOARD

Order: Denying POP Request

Jan 25, 2023PAPERBOARD

RRD Unopposed Motion to Seal Response to Request for Rehearing

Nov 17, 2022PAPERPETITIONER

RRD Response to Scriptchek Request for Rehearing PUBLIC

Nov 17, 2022PAPERPETITIONER

RRD Response to Scriptchek Request for Rehearing SEALED

Nov 17, 2022PAPERPETITIONER

Ex. 3003 POP Request

Nov 8, 2022EXHIBITBOARD

Notice: notice of receipt of POP request

Nov 8, 2022PAPERBOARD

EXPUNGED

Nov 7, 2022PAPERPATENT OWNER

Request for Rehearing [PUBLIC]

Nov 7, 2022PAPERPATENT OWNER

Exhibit 2028

Nov 7, 2022EXHIBITPATENT OWNER

EXPUNGED

Nov 7, 2022PAPERPATENT OWNER

ORDER Conduct of the Proceeding

Nov 2, 2022PAPERBOARD

Ex. 3002

Nov 2, 2022EXHIBITBOARD

Motion to Expunge Confidential Information

Oct 20, 2022PAPERPETITIONER

Order: Conduct of Proceeding

Oct 5, 2022PAPERBOARD

Ex. 3001

Oct 4, 2022EXHIBITBOARD

PETITIONER R.R. DONNELLEY & SONS COMPANY'S AND PATENT OWNER SCRIPTCHEK VISUAL VERIFICATION SYSTEMS, INC.'S JOINT PROPOSED REDACTIONS TO FINAL WRITTEN DECISION

Sep 12, 2022PAPERPETITIONER

Final Written Decision: Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318a

Sep 6, 2022PAPERBOARD

Order: Granting Motions to Seal 37 C.F.R. secs. 42.5, 42.14

Sep 6, 2022PAPERBOARD

PETITIONER R.R. DONNELLEY & SONS COMPANYS AND PATENT OWNER SCRIPTCHEK VISUAL VERIFICATION SYSTEMS, INC.S JOINT PROPOSED REDACTED VERSION OF RECORD OF ORAL HEARING

Aug 22, 2022PAPERPETITIONER

Other: Hearing transcript

Aug 15, 2022PAPERBOARD

ORDER Conduct of the Proceeding 37 C.F.R. sec 42.5

Aug 15, 2022PAPERBOARD

Patent Owner's Demonstratives [sealed]

Jun 8, 2022PAPERPATENT OWNER

Patent Owner's Demonstratives [public]

Jun 8, 2022PAPERPATENT OWNER

Motion to Seal re: Patent Owner's Demonstratives

Jun 8, 2022PAPERPATENT OWNER

1022 - RRD Oral Hearing Demonstratives

Jun 8, 2022EXHIBITPETITIONER

LEAP Practitioner Request and Verification Form (Petitioner)

Jun 7, 2022PAPERBOARD

Patent Owner's Sur-Reply re: Privity [Sealed]

Apr 29, 2022PAPERPATENT OWNER

Patent Owner's Sur-Reply re: Privity [Public]

Apr 29, 2022PAPERPATENT OWNER

Ex 2027 Cenveo Chapter 11 Saga Unfolds with Accusations, Ruling, Plant Closures

Apr 29, 2022EXHIBITPATENT OWNER

Ex 2022 Warmus Deposition Transcript [Public]

Apr 29, 2022EXHIBITPATENT OWNER

Unopposed Motion to Seal re: Privity Sur-Reply

Apr 29, 2022PAPERPATENT OWNER

Order: ORDER Setting Oral Argument

Apr 27, 2022PAPERBOARD

PO Request for Oral Argument

Apr 26, 2022PAPERPATENT OWNER

Petitioner Request for Oral Argument

Apr 26, 2022PAPERPETITIONER

Patent Owner's Corrected Request for Oral Argument

Apr 26, 2022PAPERPATENT OWNER

Petitioner RRD Reply to Scriptchek Response re Privity [SEALED]

Apr 15, 2022PAPERPETITIONER

Petitioner RRD Reply to Scriptchek Response re Privity [PUBLIC]

Apr 15, 2022PAPERPETITIONER

1017 - Company Update

Apr 15, 2022EXHIBITPETITIONER

1018 - Customer FAQ

Apr 15, 2022EXHIBITPETITIONER

1019 - Cenveo Website re Pharmaceuticals

Apr 15, 2022EXHIBITPETITIONER

1020 - RRD 10-K Annual Report 12.31.2018 Excerpt

Apr 15, 2022EXHIBITPETITIONER

1021 - Second Declaration of James Warmus [PUBLIC]

Apr 15, 2022EXHIBITPETITIONER

1021 - Second Declaration of James Warmus [SEALED]

Apr 15, 2022EXHIBITPETITIONER

Petitioner RRD Unopposed Motion to Seal

Apr 15, 2022PAPERPETITIONER

Patent Owner's Sur-Reply

Apr 5, 2022PAPERPATENT OWNER

Order: REVISED SCHEDULING ORDER 37 C.F.R. § 42.5

Mar 18, 2022PAPERBOARD

Patent Owner Response re: Privity [Sealed]

Mar 18, 2022PAPERPATENT OWNER

Patent Owner Response re: Privity [Public]

Mar 18, 2022PAPERPATENT OWNER

Exhibit 2022 Warmus Depo Transcript [Sealed]

Mar 18, 2022EXHIBITPATENT OWNER

EXPUNGED

Mar 18, 2022EXHIBITPATENT OWNER

Exhibit 2023 Second Mosby Declaration [Public]

Mar 18, 2022EXHIBITPATENT OWNER

Exhibit 2024 Cenveo Bankruptcy Petition

Mar 18, 2022EXHIBITPATENT OWNER

Exhibit 2025 Statista Research

Mar 18, 2022EXHIBITPATENT OWNER

Exhibit 2026 ScriptChek-CVS Email Correspondence

Mar 18, 2022EXHIBITPATENT OWNER

Unopposed Motion to Seal

Mar 18, 2022PAPERPATENT OWNER

RR Donnelley Reply to Patent Owner's Response

Feb 22, 2022PAPERPETITIONER

1016 - Mosby, Joseph Deposition Transcript 2022.02.02

Feb 22, 2022EXHIBITPETITIONER

ORDER Denying Patent Owners Motion for Additional Discovery 37 C.F.R. § 42.51(b)(2) Granting Motions to Seal 37 C.F.R. sec s 42.5, 42.14

Feb 15, 2022PAPERBOARD

RRD Notice of Deposition of Joseph Mosby

Jan 26, 2022PAPERPETITIONER

Patent Owner Response [Sealed]

Nov 30, 2021PAPERPATENT OWNER

Patent Owner Response [PUBLIC]

Nov 30, 2021PAPERPATENT OWNER

EXPUNGED

Nov 30, 2021EXHIBITPATENT OWNER

Exhibit 2016 - Maliszewski Deposition Transcript [PUBLIC]

Nov 30, 2021EXHIBITPATENT OWNER

Exhibit 2017 - Rx Wiki Page re OBRA 90

Nov 30, 2021EXHIBITPATENT OWNER

Exhibit 2018 - ComputerTalk Article

Nov 30, 2021EXHIBITPATENT OWNER

Exhibit 2019 - Lexmark Card Stock & Label Guide

Nov 30, 2021EXHIBITPATENT OWNER

Exhibit 2020 - RRD Website

Nov 30, 2021EXHIBITPATENT OWNER

EXPUNGED

Nov 30, 2021EXHIBITPATENT OWNER

Exhibit 2021 - Mosby Declaration [PUBLIC]

Nov 30, 2021EXHIBITPATENT OWNER

Unopposed Motion to Seal

Nov 30, 2021PAPERPATENT OWNER

RRD Unopposed Motion to Seal Reply to PO Motion for Additional Discovery

Nov 24, 2021PAPERPETITIONER

RRD Opposition to Patent Owner Motion for Additional Discovery

Nov 24, 2021PAPERPETITIONER

RRD Opposition to Patent Owner Motion for Additional Discovery

Nov 24, 2021PAPERPETITIONER

Motion for Additional Discovery [SEALED]

Nov 17, 2021PAPERPATENT OWNER

Motion for Additional Discovery [PUBLIC]

Nov 17, 2021PAPERPATENT OWNER

Patent Owner Discovery Requests

Nov 17, 2021EXHIBITPATENT OWNER

Unopposed Motion to Seal re Motion for Additional Discovery

Nov 17, 2021PAPERPATENT OWNER

Notice of Deposition - Maliszewski

Nov 10, 2021PAPERPATENT OWNER

Notice of Deposition - Warmus

Nov 10, 2021PAPERPATENT OWNER

DECISION Conduct of the Proceeding 37 C.F.R. sec 42.5

Nov 9, 2021PAPERBOARD

DECISION Granting Motions to Seal and Entering Protective Order 37 C.F.R. 42.5, 42.14, 42.54

Oct 4, 2021PAPERBOARD

PETITIONER R.R. DONNELLEY & SONS COMPANY AND PATENT OWNER SCRIPTCHEK VISUAL VERIFICATION SYSTEMS, INC. JOINT PROPOSED REDACTED VERSION OF DECISION GRANTING INTER PARTES REVIEW

Sep 14, 2021PAPERPETITIONER

Institution Decision: Grant

Sep 7, 2021PAPERBOARD

SCHEDULING ORDER

Sep 7, 2021PAPERBOARD

Patent Owner's Sur-Reply re Privity and RPI Issues [PUBLIC]

Jul 21, 2021PAPERPATENT OWNER

Patent Owner's Sur-Reply re Privity and RPI Issues [SEALED]

Jul 21, 2021PAPERPATENT OWNER

Unopposed Motion to Seal

Jul 21, 2021PAPERPATENT OWNER

RRD Unopposed Motion to Seal

Jul 7, 2021PAPERPETITIONER

PETITIONER R.R. DONNELLEY & SONS COMPANYS REPLY TO PATENT OWNERS PRELIMINARY RESPONSE REGARDING PRIVITY AND REAL PARTY IN INTEREST [SEALED]

Jul 7, 2021PAPERPETITIONER

PETITIONER R.R. DONNELLEY & SONS COMPANYS REPLY TO PATENT OWNERS PRELIMINARY RESPONSE REGARDING PRIVITY AND REAL PARTY IN INTEREST [PUBLIC]

Jul 7, 2021PAPERPETITIONER

Ex 1012 - Excerpts of R.R. Donnelley Form 10-K Annual Report for the Fiscal Year Ending in December 31, 2020

Jul 7, 2021EXHIBITPETITIONER

Ex 1013 - Declaration of James Warmus [SEALED]

Jul 7, 2021EXHIBITPETITIONER

Ex 1013 - Declaration of James Warmus [PUBLIC]

Jul 7, 2021EXHIBITPETITIONER

Ex 1014 - Correspondence Between CVSs Outside Counsel and J M Smiths Outside Counsel re the J M Smith v. CVS Lawsuit [SEALED]

Jul 7, 2021EXHIBITPETITIONER

Ex 1015 - April 23, 2021 Email from Reginald J. Hill to Joseph A. Rhoa Titled RE IPR2021-00564 (R.R. Donnelley v. ScriptChek)

Jul 7, 2021EXHIBITPETITIONER

Patent Owner Preliminary Response - Sealed

Jun 8, 2021PAPERPATENT OWNER

Patent Owner Preliminary Response - Public Version

Jun 8, 2021PAPERPATENT OWNER

Exhibit 2001 - RRD's Gross Revenue and Volume of Labels Produced for CVS - Sealed

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2002 - Master Service Agreement - sealed

Jun 8, 2021EXHIBITPATENT OWNER

EXPUNGED

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2004 - SOWs - sealed

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2005 - RRD Letter to CVS - sealed

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2006 - CVS Letter to RRD - sealed

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2007 - RRD-CVS Email Correspondence - sealed

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2008 - Complaint against CVS

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2009 - Proof of Service of Complaint against CVS

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2010 - Dismissal of JM Smith Case

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2011 - State Court Complaint

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2012 - Notice of Removal

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2013 - RRD Initial Disclosures

Jun 8, 2021EXHIBITPATENT OWNER

Exhibit 2014 - Order Granting Remand

Jun 8, 2021EXHIBITPATENT OWNER

Unopposed Motion to Seal and Enter Protective Order

Jun 8, 2021PAPERPATENT OWNER

Patent Owner POA

Mar 19, 2021PAPERPATENT OWNER

Patent Owner Mandatory Notices

Mar 19, 2021PAPERPATENT OWNER

Notice of Accord Filing Date

Mar 8, 2021PAPERBOARD

1001 - US 7398999 Kaufman

Feb 26, 2021EXHIBITPETITIONER

1003 - US 0257136 Livor

Feb 26, 2021EXHIBITPETITIONER

1004 - US 6125563 Girerd

Feb 26, 2021EXHIBITPETITIONER

1005 - US 5996130 Verhines

Feb 26, 2021EXHIBITPETITIONER

1006 - SN 11-050337 US 7398999

Feb 26, 2021EXHIBITPETITIONER

1007 - SN 12-137688 Abandoned

Feb 26, 2021EXHIBITPETITIONER

1008 - US 5074595 Hill

Feb 26, 2021EXHIBITPETITIONER

1009 - US 2194220 Elder

Feb 26, 2021EXHIBITPETITIONER

1010 - US 6129959 Mercer

Feb 26, 2021EXHIBITPETITIONER

1011 - US 5775019 Johnson

Feb 26, 2021EXHIBITPETITIONER

1002 - Expert Declaration of Mark Maliszewski

Feb 26, 2021EXHIBITPETITIONER

RRD Petition for Inter Partes Review of US 7398999

Feb 26, 2021PAPERPETITIONER

RRD Power of Attorney

Feb 26, 2021PAPERPETITIONER